DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1, 23, 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 18, 19 of U.S. Patent No. 12,081,188. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent ‘188 claims an acoustic wave device, comprising: a quartz substrate including a first surface; a piezoelectric plate formed from LiTaO.sub.3 or LiNbO.sub.3 and including a first surface configured to support a surface acoustic wave and a second surface in direct engagement with the first surface of the quartz substrate, the second surface being a minus surface resulting from crystal structure orientation of the piezoelectric plate; and an interdigital transducer electrode formed on the first surface of the piezoelectric plate and configured to provide transducer functionality associated with the surface acoustic wave; a method for fabricating the acoustic wave device; and a radio frequency filter comprising input and output nodes, acoustic wave device between the input and output nodes.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 23, 40 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe US 9,431,996.
1. Watanabe discloses an acoustic wave device (Fig. 1A, etc.) comprising:
a quartz substrate (2; Col. 7 lines 14-24) including a first (top) surface;
a piezoelectric plate formed from LiTaO.sub.3 or LiNbO.sub.3 (5; Col. 9 lines 5-12) and including a first (top) surface configured to support a surface acoustic wave and a second (bottom) surface in engagement with the first surface of the quartz substrate, the second surface being a minus surface resulting from crystal structure orientation of the piezoelectric plate (Col. 9 line 7, the Euler angle of the piezoelectric layer gives the minus bottom surface, see Applicant’s Table 1); and
an interdigital transducer electrode (6) formed on the first surface of the piezoelectric plate and configured to provide transducer functionality associated with the surface acoustic wave.
23. Watanabe discloses a method for fabricating (realized by) an acoustic wave device (Fig. 1A, etc.), the method comprising:
forming or providing a quartz substrate (2; Col. 7 lines 14-24) having a first (top) surface;
forming or providing a piezoelectric plate with LiTaO.sub.3 or LiNbO.sub.3 (5; Col. 9 lines 5-12) to include a first (top) surface configured to support a surface acoustic wave and a second (bottom) surface being a minus surface resulting from crystal structure orientation of the piezoelectric plate (Col. 9 line 7, the Euler angle of the piezoelectric layer gives the minus bottom surface, see Applicant’s Table 1); and
coupling the piezoelectric plate with the quartz substrate such that the minus surface of the piezoelectric plate engages the first surface of the quartz substrate (see Fig. 1A).
40. Watanabe discloses a radio-frequency filter (Fig. 1A, etc.; Col. 1 lines 7-8, Col. 9 lines 20-31) comprising:
an input node for receiving a signal (inherent to the filter);
an output node for providing a filtered signal (inherent to the filter); and
an acoustic wave device implemented to be electrically between the input node and the output node to generate the filtered signal (Col. 9 lines 20-31; e.g., ladder filter), the acoustic wave device including a quartz substrate (2; Col. 7 lines 14-24) with a first (top) surface, and a piezoelectric plate formed from LiTaO.sub.3 or LiNbO.sub.3 (5; Col. 9 lines 5-12) and having a first (top) surface configured to support a surface acoustic wave and a second (bottom) surface in engagement with the first surface of the quartz substrate, the second surface being a minus surface resulting from crystal structure orientation of the piezoelectric plate (Col. 9 line 7, the Euler angle of the piezoelectric layer gives the minus bottom surface, see Applicant’s Table 1).
Conclusion
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/A.W/Examiner, Art Unit 2843
/ANDREA LINDGREN BALTZELL/Supervisory Patent Examiner, Art Unit 2843